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Agreements, Sharing, and Consulting
Do sponsored research agreements limit when I may publish or use results from my research?
If an invention or discovery arose under a sponsored research agreement, particularly from a commercial entity, some additional delay in publication may be required to comply with contractual obligations with that company or other entity. You should contact the Invention Management Office or the Office of Research, and we can quickly review the sponsored research agreement and get back to you about what the contractual obligations are for you and Intermountain Healthcare.
May I use or share materials, confidential information, or intellectual property of others in my research?
Yes, but it is important to document the items being transferred and their conditions of use. The Invention Management Office and the Office of Research help to negotiate and obtain agreements that govern the transfer of one institution or company's proprietary materials to another organization for research purposes. Materials may include tangible items such as human samples or intangible items such as data and software source code. These agreements are necessary when an investigator at Intermountain receives a request for valuable research materials from an outside investigator or company, or when an investigator at Intermountain desires to receive materials from another institution or company.
These agreements are intended to protect both your and Intermountain's ownership interest in the material that is being distributed to the other party by containing provisions regarding the use of material. These agreements also protect you and Intermountain from liability. In addition, Intermountain investigators often receive contractual protection to publish and use the results of their experiments with the materials.
Can consulting affect my research?
Companies usually expect to own research and inventions made as part of your consulting relationship, even if the research and inventions would normally be considered to be owned by Intermountain Healthcare. If you wish to consult, Intermountain's Conflict of Interest Policy provides a way to obtain an exception from potential institutional ownership - in advance - for inventions that may relate to your work at Intermountain but which are created off-site and at the expense of the company. For further information on consulting or other areas of potential conflict please review and familiarize yourself with Intermountain's Intellectual Property Policy and Conflict of Interest Policy.
Intellectual Property Concerns
Why should I protect my ideas?
Intellectual property protection provides incentives for you and commercial partners to research and develop technologies and inventions. For example, a patent establishes the right to exclude others from practicing an invention for twenty years from the date of filing a patent application. That may seem like a long time until you consider the thousands of hours and millions of dollars it takes to develop, test, manufacture and market a product before it is ever made available to the public. Patents and other intellectual property can be the core of a commercial company's business. They offer exclusivity that reduces a company's risk that another competitive company will be able to develop the exact same product or technology during product research and development. In addition, the exclusivity gives the company time to recoup its significant investment in a new product by acting as an appropriate barrier to the entry of competitors into the market.
Should I publish or let the Invention Management Office file for patent protection?
Both. It is not a matter of having to choose between patents and publications; both are compatible. You should keep in mind that one of the criteria for patentability is novelty - that the idea not be known publicly - and this criterion is lost once there is a publication, post on the internet, or presentation at a conference.
Therefore, if you're planning an imminent publication or presentation outside Intermountain, it would be helpful if you contact the Invention Management Office to disclose your invention as soon as possible. The Invention Management Office will work with you to protect your invention as broadly as possible with no or minimal impact on your publication or presentation plans. Once a patent is filed, you are then able to publish or otherwise publicly disclose your invention without jeopardizing patent rights.
Does patenting my invention, idea or discovery inhibit my research and publication?
No. Even if your invention is exclusively licensed to a company for commercial purposes, Intermountain in most cases keeps the right to use the invention and grant rights to others to use the invention for non-commercial research, education and patient care. In addition, the patent process does not prevent you from publishing or presenting your work. The Invention Management Office works with inventors to ensure the timely filing of applications before publication or a presentation. However, sufficient lead-time is always appreciated.
Why is there so much concern about the publication date or release of an abstract for a conference?
To ensure U.S. patent rights for your work, a patent application must be filed within a year of publication or presentation of the invention. To maintain patent rights in other parts of the world, a patent application must be filed prior to publication or presentation. Therefore, if you have a useful invention or new discovery with potential for commercial use, you should contact Intermountain Healthcare before you disclose new ideas or research results through:
- Submission of a pre-publication manuscript
- Submission of a meeting abstract
- A seminar or other presentation
- Other public disclosure to a person or entity outside of Intermountain Healthcare
What is a "public disclosure" about an invention or discovery?
Generally defined, public disclosure is any communication to someone not obliged to keep the communication confidential. An enabling public disclosure occurs when you provide others (i.e. other physicians, investigators, or employees that have a similar technical or medical background as yourself) with information that enables them to recreate your discovery. In patent law, an enabling public disclosure can defeat patentability if it is both public and enabling.
Public disclosures include: oral presentations, meeting and grant abstracts, posters, papers, monographs, book chapters, letters, internet publications, etc. that are given outside of Intermountain Healthcare.
What if I make a public disclosure about my idea or discovery before contacting the Invention Management Office?
You should still disclose your invention to the Invention Management Office for evaluation. For patents, while certain foreign rights may be lost, there is still the potential for obtaining domestic protection. U.S. patent law gives an inventor a period of one year to file a patent application after the date of the first public disclosure of the invention. If the disclosure is made more than one year prior to a patent application, the disclosure is considered "prior art" and the invention will likely not be patentable.